Ex Parte Ferlitsch

Board of Patent Appeals and Interferences

Jul 30, 2012

10659513 (B.P.A.I. Jul. 30, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/659,513 09/10/2003 Andrew Rodney Ferlitsch SLA1305 3618
7590 07/31/2012
Gerald W. Mallszewski
P.O. Box 270829
San Diego, CA 92198-2829
EXAMINER
RODRIGUEZ, LENNIN R
ART UNIT PAPER NUMBER
2625
MAIL DATE DELIVERY MODE
07/31/2012 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ANDREW RODNEY FERLITSCH
____________

Appeal 2010-004498
Application 10/659,5131
Technology Center 2600
____________

Before MARC S. HOFF, CARLA M. KRIVAK, and
ELENI MANTIS MERCADER, Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL
Appellant(s) appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 3-7, 9-11, 13-17, 20, 22-28, 30-38, 41, and 42.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 The real party in interest is Sharp Laboratories of America, Inc.
2 Claims 2, 8, 12, 18, 19, 21, 29, 39, and 40 have been cancelled.
Appeal 2010-004498
Application 10/659,513

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STATEMENT OF THE CASE
Appellant’s invention is a system and method for maintaining a
specific device work history in an imaging device. The imaging device
maintains a log of all jobs and their corresponding status. The method
comprises sending jobs to a device for performance; making a record of the
jobs; maintaining the job record after the performance of the job; and
filtering the job record to retain a history associated with a client by
matching the client network address to jobs having the same network
address (Spec. 6-8).
Independent claim 1, reproduced below, is representative of the
subject matter on appeal.
1. A method for maintaining a device job history on an imaging
device, the method comprising:

sending jobs, along with a network address associated with a client
sending the jobs, to an imaging device for printing;

making a record of the jobs;

maintaining the job record in the imaging device, after the
performance of the jobs on the imaging device printing the job; and,

filtering the job record to retain a history associated with a client by
matching the client network address to jobs having the same network
address.

REFERENCES and REJECTIONS
Claims 1, 3-5, 7, 9, 11, 13-17, 20, 22-26, 28, 30, 32, 36-38, 41, and 42
stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Carney
(Patent Application Publication No. US 2002/0080389 A1, Jun. 27, 2002) in
Appeal 2010-004498
Application 10/659,513

3
view of admitted prior art (APA) and Richter (US Patent Application No.
6,678,068 B1, Jan. 13, 2004).
Claims 6, 27, and 33-35 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Carney in view of APA, Richter, and Kullick (US
Patent No. 5,732,275, Mar. 24, 1998).
Claims 10 and 31 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Carney in view of Richter, APA, and Saruwatari (US
Patent Application Publication No. 2002/0059361 A1, May 16, 2002).

ISSUES
Appellant argues, inter alia, that the combination of Carney, APA,
and Richter does not disclose an imaging device that maintains a record of
jobs that have already been performed by a print system (Reply Br. 5).
“Once the job is printed, its attributes are no longer maintained” (id.).
Appellant further contends that none of Carney, APA, or Richter
recite an imaging device that filters the job history by client network address
(App. Br. 13).
Appellant's contentions present us with the following issues:
1. Does the combination of Carney, APA, and Richter teach or fairly
suggest maintaining a job record in the imaging device after the performance
of the jobs on the imaging device printing the job?
2. Does the combination of Carney, APA, and Richter teach or fairly
suggest filtering the job record to retain a history associated with a client by
matching the client network address to jobs having the same network
address?

Appeal 2010-004498
Application 10/659,513

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FINDINGS OF FACT
Carney
1. Carney teaches that “[w]hen the Job Monitor 200 recognizes the
end of job condition, the job is marked as complete in the job table and
references to the job in persistent storage are deleted” (¶ [0089]).

PRINCIPLES OF LAW
Section 103(a) forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are
such that the subject matter as a whole would have been obvious at
the time the invention was made to a person having ordinary skill in
the art to which said subject matter pertains.’

KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 406 (2007). The question of
obviousness is resolved on the basis of underlying factual determinations
including (1) the scope and content of the prior art, (2) any differences
between the claimed subject matter and the prior art, (3) the level of skill in
the art, and (4) where in evidence, so-called secondary considerations.
Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See also KSR, 550
U.S. at 407, (“While the sequence of these questions might be reordered in
any particular case, the [Graham] factors continue to define the inquiry that
controls.”)

ANALYSIS
CLAIMS 1, 3-5, 7, 9, 11, 13-17, 20, 22-26, 28, 30, 32, 36-38, 41, AND 42
Independent claims 1, 20, 41, and 42 each contain limitations directed
to “maintaining the job record in the imaging device after the performance
Appeal 2010-004498
Application 10/659,513

5
of the jobs,” and “filtering the job record . . . by matching the client network
address to jobs having the same network address.”
The Examiner finds that Carney teaches a repository, residing in the
imaging device (Job Monitor 118), that maintains a job record after
performance of the print job (Ans. 4). The Examiner cites Carney ¶¶ [0012]
and [0013] in support of this finding.
We do not agree with the Examiner’s finding. Neither of these
paragraphs teaches that the “repository of attributes and status associated
with each print job” (¶ [0012]) maintains a job record after performance of
the job. To the contrary, we find that Carney teaches that “[w]hen the Job
Monitor 200 recognizes the end of job condition, the job is marked as
complete in the job table and references to the job in persistent storage are
deleted” (FF 1).
The Examiner further finds that Richter teaches filtering the job
record to create a filtered history of jobs associated with the client (Ans. 28,
citing Richter col. 23, ll. 7-15). The Examiner also finds that Richter teaches
“that it uses different criteria to filter the jobs and the one used here could be
the admitted prior art teachings of a network address” (Ans. 28).
We do not agree with the Examiner’s further findings. We have
reviewed Richter, and we find that Richter does not teach filtering the job
record by matching client network address to jobs having the same network
address. We have also reviewed Appellant's admitted prior art (Figure 2 and
¶ [0018]). We are not persuaded that the combination of Richter and APA
fairly suggests using the client network address as the criteria for filtering
the job record to retain a history associated with a client.
Appeal 2010-004498
Application 10/659,513

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We find that the Examiner erred in rejecting claims 1, 3-5, 7, 9, 11,
13-17, 20, 22-26, 28, 30, 32, 36-38, 41, and 42 under § 103 as being
unpatentable over Carney in view of APA and Richter. We will not sustain
the Examiner’s rejection.

CLAIMS 6, 10, 27, 31, AND 33-35
We have reviewed the further references to Kullick and Saruwatari
and we find that they do not remedy the deficiencies of the combination of
Carney, APA, and Richter explained supra. Accordingly, we find that the
Examiner erred in rejecting claims 6, 10, 27, 31, and 33-35 under § 103, for
the same reasons given supra with respect to claims 1, 3-5, 7, 9, 11, 13-17,
20, 22-26, 28, 30, 32, 36-38, 41, and 42.

CONCLUSIONS
1. The combination of Carney, APA, and Richter does not teach or
fairly suggest maintaining a job record in the imaging device after the
performance of the jobs on the imaging device printing the job.
2. The combination of Carney, APA, and Richter does not teach or
fairly suggest filtering the job record to retain a history associated with a
client by matching the client network address to jobs having the same
network address.

Appeal 2010-004498
Application 10/659,513

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DECISION
The Examiner’s decision rejecting claims 1, 3-7, 9-11, 13-17, 20,
22-28, 30-38, 41, and 42 is reversed.

REVERSED

pgc